Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Darren Smyth, Nicola Searle, Eleonora Rosati, David Brophy, Alberto Bellan and Merpel, with contributions from Mark Schweizer. You're welcome to read, post comments and participate. You can email the Kats here

From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Friday, 18 September 2015

Who can be considered an 'intermediary'
within Article 11 of the Enforcement Directive, so that “rightholders
are in a position to apply for an injunction” against such subjects “whose
services are used by a third party to infringe an intellectual property right,
without prejudice to Article 8(3) of Directive 2001/29/EC[the InfoSoc Directive]”?

Are 'intermediaries' the same subjects
that the Ecommerce Directive refers to as
'information society service providers', and the InfoSoc Directive also calls
'intermediaries'?

This question is not really one of
linguistics, especially considering the uncertainties surrounding –
for instance - whether search engines may be considered
intermediaries within Article 11 of the Enforcement Directive, as well
as the current (heated) discussions surrounding the role and
responsibilities of online intermediaries in tackling online infringements.

With particular regard to the latter,
IPKat readers will promptly recall that this topic is indeed at the centre of
policy discussion also [but not only: just
look at Australia] at the EU level. Last May the EU Commission issued
its Digital Single Market Strategy[here and here],
in which - among other things - it announced a
discussion on the role and responsibilities of online platforms and
intermediaries to tackle infringing content. A public consultation
on – among other things – the regulatory environment for online platforms and
intermediaries [a draft version of which has been
already leaked and the IPKat discussed it here] is
due to be launched later this month.

While waiting for all these things to
happen, is there anyone better placed to discuss the identity of an 'intermediary'
than Mr Justice Richard Arnold (High Court of England and Wales
and – among other things – blocking injunctions guru)?

Of course not.

The 1st iCLIC
conference on the role of internet intermediaries in the law
enforcement process opened yesterday [you
can follow the conversation on Twitter at #iclic15] at the University of Southampton with a keynote
address by Mr Justice Arnold, in which he addressed this very question.

The Enforcement Directive and preceding
legislation

Mr Justice Arnold began his analysis by
recalling the relevant EU legislation preceding the adoption of the Enforcement
Directive.

He noted at the outset that the
rationale for enrolling online intermediaries in the enforcement process is
enshrined in Recital 59 of the InfoSoc Directive:

"In the digital environment, in
particular, the services of intermediaries may increasingly be used by
third parties for infringing activities. In many cases such intermediaries are best
placed to bring such infringing activities to an end ..."

In other words, and to use a language
borrowed from economists, the EU legislature considered intermediaries the best
placed to bring infringing activities to an end [but also prevent new infringements from occurring, as the Court of
Justice of the European Union (CJEU) most recently recalled at para 37 of
its Telekabeljudgment, discussed here] because
these subjects are the lowest-cost avoiders.

He also noted how Article 8(3) of the
InfoSoc Directive does not contain an express reference to the 'digital
environment', and Recital 59 itself stresses that the role of intermediaries
may be relevant “in the digital environment, in particular”, but does
not appear limited to that [Merpel
notes that this may be reassuring to hear for those (very few) who still have an
off-line life].

Although the InfoSoc Directive is
limited to copyright, the rationale of Recital 59 is the same of the general
provision in Article 11 of the Enforcement Directive.

Having looked into relevant EU
legislation, then Mr Justice Arnold considered UK implementation of the
relevant provisions.

Too cool to care?

UK implementation of EU directives

The judge recalled how, while UK
Government expressly transposed Article 8(3) of the InfoSoc Directive into its
own copyright law [it is section 97(A) of the Copyright, Designs and
Patents Act 1988 (CDPA)], it decided against
doing the same with regard to Article 11 of the Enforcement Directive, on
consideration that section 37(1) of the Supreme Court Act 1981
was already enough [but if that was
actually the case, noted the learned judge, then why didn’t the UK Government
repeal section 97(A)? For an analysis of the (messy) state of UK copyright
legislation, do take a look at this Jeremy post].

There is no need to recall that, until
the decision in Cartier[another thoughtful decision by Mr Justice Arnold, noted here],
lack of express implementation of Article 11 of the Enforcement Directive into
UK law had resulted in uncertainties whether an injunction against an
intermediary could be sought in this Member State in case of infringement of
intellectual property rights other than copyright [trade marks in the specific case of Cartier].

In any case, if one looks at the
language employed in section 97A CDPA will notice that this provision speaks of
'service providers' rather than intermediaries, as it should have been instead
the case under the InfoSoc Directive.

The reason?

The language of section 97A was derived
from the legislative instrument through which the UK had implemented the
Ecommerce Directive into its own domestic law. But are service providers
the same thing as intermediaries?

Who is an intermediary? But does the
answer matter at all in the UK?

To address this, Mr Justice Arnold
looked into two CJEU cases, these being LSGand the already mentioned Telekabel.

In those cases the CJEU held that
access providers and internet service providers are intermediaries. "[A]n internet service provider ... which allows its
customers to access protected subject-matter made available to the public on
the internet by a third party is an intermediary", held the CJEU at para 32 of its Telekabel judgment.

However, there are instances in which
the nature of intermediaries or certain platforms [just to borrow from the language used by the EU Commission in its
leaked draft consultation] has
been basically taken for granted. This has been for instance the case of
auction sites and online marketplaces in eBay, and online retailers in Cartier
in which online retailers such as the target websites in
that case could count as intermediaries.

However, if one takes the case of
credit card providers [which, is worth
highlighting, are central to the much publicised discussed
Follow the Money approach, which Mr Justice Arnold discussed in unusual
(considering the overall excitement surrounding it) non-overly-enthusiastic
tone in Cartier],
are they intermediaries? According to the learned judge this is unclear. As a
result it is uncertain whether injunctions can be sought against them. As such,
he expressed the need for guidance being provided at the level of national
courts [possibly with a CJEU reference as well?].

However, he noted that as far as UK is
concerned, this may not be really an issue, as section 37(1) of the Supreme
Court Act 1981 allows the High Court to issue an injunction

"in all cases
in which it appears to the court to be just and convenient to do so."

The result? It does not really matter
whether one is an intermediary within Article 11 of the Enforcement Directive
when it comes to intellectual property infringements, at least in the UK.

But - notes this Kat - can the same be
said also for other EU Member States?

IPKat Policies

This page summarises the IPKat policies on guest submissions and comments. If you have posted a comment to one of our blogposts and it hasn't appeared, it may be because it doesn't match our criteria for moderation. To learn more about our guest submissions, comments and complaints policy and the procedure for lodging a complaint click here.

Has the Kat got your tongue?

Just click the magic box below and get this page translated into a bewildering selection of languages!